Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88212408 ENSO (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8821240 8/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence has been attached: arguments
Original PDF file:
evi_3810821634-2020072115 2101919287_._ENSO__Styliz ed__-_Response_to_Office_ Action__F3611273x96B9E_.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 002 for Watercolor paints for use in art; painting sets for artists
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 002, the mark was first used at least as early as 02/01/2018 and first used in commerce at least as early as 02/01/2018.


Proposed:
Class 002 for Watercolor paints for use in art; painting sets for artists

Deleted Filing Basis: 1(b)
In International Class 002, the mark was first used at least as early as 02/01/2018 . and first used in commerce at least as early as 02/01/2018 .

Applicant hereby submits one(or more) specimen(s) for Class 002. The specimen(s) submitted consists of website printout bearing the mark in connection with the goods. Leaflet containing photographs of the product packaging bearing the mark in conneciton with the goods.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-3810821634-202007211 52101919287_._BLICK_Searc h_Results__F3611262x96B9E _.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU0-3810821634-202007211 52101919287_._PCA_enso_le aflet__F3611268x96B9E_.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2

Applicant proposes to amend the following:

Current:
Class 016 for Fountain pens; ink for fountain pens; ink cartridge for fountain pens; calligraphy pens; ink cartridge for calligraphy pens; ballpoint pens; refill for ballpoint pens; marking pens; refill for marking pens; felt-tip pens; mechanical pencils; leads for mechanical pencils; colored pencils and other writing instruments; painters' articles; erasers; stamps for seals; stationery; calligraphy sets containing pens in multiple colors; hand lettering sets containing pens and ink cartridges in multiple colors
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 016, the mark was first used at least as early as 02/01/2018 and first used in commerce at least as early as 02/01/2018.


Proposed:
Class 016 for Fountain pens; ink for fountain pens; ink cartridge for fountain pens; calligraphy pens; ink cartridge for calligraphy pens; ballpoint pens; refill for ballpoint pens; marking pens; refill for marking pens; felt-tip pens; mechanical pencils; leads for mechanical pencils; colored pencils and other writing instruments; painters' articles; erasers; stamps for seals; stationery; calligraphy sets containing pens in multiple colors; hand lettering sets containing pens and ink cartridges in multiple colors

Deleted Filing Basis: 1(b)
In International Class 016, the mark was first used at least as early as 02/01/2018 . and first used in commerce at least as early as 02/01/2018 .

Applicant hereby submits one(or more) specimen(s) for Class 016. The specimen(s) submitted consists of photographs of product packaging bearing the mark in conneciton with the goods.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU1-3810821634-202007211 52101919287_._Class_16_Su bstitute_Specimen__F32878 40x96B9E_.pdf
Converted PDF file(s) ( 1 page) Specimen File1

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Kabushiki Kaisha Pilot Corporation, TA Pilot Corporation, a corporation of Japan, having an address of
      6-21, Kyobashi 2-Chome, Chuo-ku
      Tokyo, 104-8304
      Japan

Proposed: Kabushiki Kaisha Pilot Corporation, TA Pilot Corporation, a corporation of Japan, having an address of
      6-21, Kyobashi 2-Chome, Chuo-ku
      Tokyo, 104-8304
      Japan
      Email Address: XXXX
Correspondence Information (current):
      Charles T.J. Weigell
      PRIMARY EMAIL FOR CORRESPONDENCE: Weigell-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is KKPC 1812010.
Correspondence Information (proposed):
      Charles T.J. Weigell
      PRIMARY EMAIL FOR CORRESPONDENCE: Weigell-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is KKPC 1812010.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_3810821634-152101919_. _zed__-_Signed_Declaratio n_for_Sub._Specimen__F356 2980x96B9E_.pdf
Converted PDF file(s) (1 page) Signature File1
Signatory's Name: Shu ITOH
Signatory's Position: President & Representative Director

Response Signature
Signature: /ctw/     Date: 07/21/2020
Signatory's Name: Charles T. J. Weigell
Signatory's Position: Attorney of record, New York State Bar member

Signatory's Phone Number: 212-813-8239

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Charles T.J. Weigell
   Fross Zelnick Lehrman & Zissu, P.C.
   
   151 W. 42nd Street, 17th Floor
   New York, New York 10036
Mailing Address:    Charles T.J. Weigell
   Fross Zelnick Lehrman & Zissu, P.C.
   151 W. 42nd Street, 17th Floor
   New York, New York 10036
        
Serial Number: 88212408
Internet Transmission Date: Tue Jul 21 17:12:23 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020072117122392
1620-88212408-740619cf18a4fe2211dc9815cb
6a4a84be92674a0d96f4d71d4cba36c573ee832-
N/A-N/A-20200721152101919287